Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
2. Applicants’ arguments and amendments filed on 7/02/2026 have been considered. However, they are not persuasive. Therefore, the following action is Final.
Any objections and/or rejections made in the previous action, and not repeated below, are hereby withdrawn.
Status of the application
3. Claims 1-20 are pending in this application
Claims 1-20 have been rejected.
Claim Rejections - 35 USC § 103
4. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
5. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
6. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
7. Claims 1-8, 11-18 are rejected under 35 U.S.C. 103 as being unpatentable over Sagliano et al. USPN 5820916 in view of Barbara et al. PL 176879 B1.
8. Regarding claims 1, 3, 4, 7, 8, 11, 13, 14, 17, 18, Sagliano et al. discloses a method for growing and preserving nutrients in plant material particularly wheatgrass and the steps include harvesting the plant tissues followed by juice extracting by providing a low pressure hydraulic press which generates no greater than 90 degree F (i.e. about 32 degree C) heat and separating juice from fibrous materials and immediately freeze dried using a pharmaceutical freeze drier to maintain said juice at a temperature below freezing and reduce said juice into a powder followed by placing said powder into a storage container with sealing for later use (at least in Abstract, col 8 lines 42-50, and claims 1, 2, 7 etc. of Sagliano). It is known that intermediate wheatgrass (Kernza) is Thinopyrum and Kernza is a domesticated (not genetically modified) form of wheatgrass as evidenced by applicants’ own specification (in PGPUB [0002], [0006]). Therefore, the method of treatment applied to wheatgrass is applicable to intermediate wheatgrass (kernza) also. Both wheatgrass and Kernza are perineal. Therefore, the disclosed generation of no greater than 90- degree F (i.e. about 32.2 degree C) meets the claimed temperature of claims 1, 3,11,13. It shows prima facie case of obviousness according to MPEP 2144.05. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It is to be noted that Sagliano et al. does not specifically disclose the pH of the extraction method. However, it can be interpreted that Sagliano et al. has an implicit disclosure of performing the extraction method using water extraction i.e. pH about neutral (7.0) which is encompassed by the claimed pH range value between about 5.0-8.0 as claimed in claims 1, 4, 11, 14. It shows prima facie case of obviousness according to MPEP 2144.05. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It is to be noted that Sagliano et al. discloses that wheatgrass is a rich source of nutritional components and is good for health ( col 2 lines 13-22). However, Sagliano et al. is specifically silent about hydroxycinnamate in wheatgrass.
The disclosed wheatgrass (Abstract, col 3 lines 6-10 and claim 1 of Sagliano et al.) is similar to the claimed intermediate wheat which is known as Thinopyrum intermedium, and is known as domesticated , not genetically modified ‘wheatgrass’ as evidenced by applicants specification (in PGPUB [0006]). Therefore, the disclosed wheatgrass will have an inherent hydroxycinnamate component and will be present into extracted composition after extraction. The reason is the disclosed method of extraction condition wheat grass is similar to the claimed method of extraction of similar wheatgrass and therefore, would have identical hydroxycinnamate extractability to have hydroxycinnamate in the extracted material.
It is also to be noted that as because the steps include further drying and freezing after extraction, it is concentrated form and, therefore, would have obvious higher amount of hydroxycinnamate extractability compared to the starting feedstock as claimed in claims 1(c ) and 11(c ) and claims 6 and 16. It is also to be noted that the higher amount depends on the extraction condition and the drying condition which are optimizable.
It is within the skill of one of ordinary skill in the art to optimize the specific extraction condition i.e. amount of time and temperature for extraction in Sagliano et al., to amounts, including that presently claimed, in order to obtain the desired effect e.g. desired recovery of treated grain which is characterized by “at least 25% higher hydroxycinnamate extractability” for claims 1, 11 and also “at least 50% higher hydroxycinnamate extractability” for claims 6, 16 compared to said starting material.
Therefore, it is optimizable.
Absent showing of unexpected results, the specific extraction condition i.e. amount of time and temperature for extraction is not considered to confer patentability to the claims. As the amount of extractable hydroxycinnamate (with other nutritional components) are variables that can be modified, among others, by adjusting the treatment conditions including specific extraction condition and degree of concentration to achieve desired degree of the precise amount including enhancement of “at least 25%” and /or “at least 50%” higher hydroxycinnamate extractability to be achieved after concentration step to the concentrated treated milled flour grain compared to starting material would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the specific extraction condition and to achieve desired degree of concentration in Sagliano et al., to amounts, including that presently claimed, in order to obtain the desired effect e.g. desired enhancement of “at least 25%” and /or “at least 50%” enhanced hydroxycinnamate extractability compared to starting grain (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Sagliano et al. is silent about reactor.
It is to be noted that it would have been obvious that the disclosed hydraulic press as disclosed by Sagliano et al. (at least in Abstract, claim 1 of Sagliano et al.) can be set in a reactor vessel for the extraction.
However, (additionally), Barbara et al. is used who discloses that the extraction of such related raw materials in the herbal containing nutritional elements can be extracted with liquid (At least in Abstract and in claim 1 of Barbara et al.) and it can be performed in a reactor which is set to under a broad range of 8 -30 MPa and 20-100 degree C (Abstract).
One of ordinary skill in the art before the effective filling date of the claimed invention would have been motivated to modify low pressure hydraulic press of Sagliano et al. with the teaching of Barbara et al. to perform the extraction using reactor settings with the disclosed broad range temperature and pressure for an efficient extraction.
9. Regarding claims 1, 2, 3, 11, 12, 13, it is to be noted that the temperature and time are variables. It is within the skill of one of ordinary skill in the art to optimize the time and temperature of extraction in a way so that the final product will have sufficient amount of extracted hydroxycinnamate extraction in the final concentrated product.
Absent showing of unexpected results, the specific extraction condition i.e. amount of time and temperature for extraction is not considered to confer patentability to the claims. As the amount of extractable hydroxycinnamate (with other nutritional components) are variables that can be modified, among others, by adjusting the specific extraction condition i.e. amount of time and temperature for extraction, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the specific extraction condition i.e. amount of time and temperature for extraction in Sagliano et al., to amounts, including that presently claimed, in order to obtain the desired effect e.g. desired enhancement of hydroxycinnamate extractability in the extracted composition. (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
10. Regarding claims 1, 4, 11, 14, it is to be noted that pH is optimizable.
It is within the skill of one of ordinary skill in the art to optimize the pH of extraction in a way so that the final product will have sufficient amount of extracted hydroxycinnamate extraction in the final concentrated product.
Absent showing of unexpected results, the specific extraction condition i.e. pH for the extraction is not considered to confer patentability to the claims. As the amount of extractable hydroxycinnamate (with other nutritional components) are variables that can be modified, among others, by adjusting the specific extraction condition i.e. pH for extraction, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the specific extraction condition i.e. pH for extraction in Sagiona et al., to amounts, including that presently claimed, in order to obtain the desired effect e.g. desired enhancement of hydroxycinnamate extractability in the extracted composition. (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
11. Regarding claims 1, 5, 11, 15, the claim limitation of “wherein the said mass ratio of said water to said starting feedstock within said reactor is “at least 1” for claims 1, 11 and “at least 10” for claims 5 and 15, are considered to be optimizable.
Sagliano et al. does not specifically teach the mass ratio of said water to said starting feedstock material. However, Sagliano et al. teaches that the plant material may be juiced and pressed to yield juice (col 7 lines 11-14) or it can be pressed by hydraulic press to extract juice followed by extraction at 90 -degree F ( at least in col 7 lines 25-30, col 9 lines 20-30 in claim 7 of Sagliano et al.). It is within the skill of one of ordinary skill in the art to optimize the amount of water and the ratio to have desired enhanced higher amount of “hydroxycinnamate extracted” product.
Absent showing of unexpected results, the specific extraction condition i. e, mass ratio of water and starting feedstock material is not considered to confer patentability to the claims. As the amount of extractable hydroxycinnamate (with other nutritional components) are variables that can be modified, among others, by adjusting the specific extraction condition i.e. mass ratio of water and starting feedstock , the precise ratio would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the specific extraction condition i.e. mass ratio of water and starting feedstock material in Sagiona et al., to amounts, including that presently claimed, in order to obtain the desired effect e.g. desired enhancement of hydroxycinnamate extractability in the extracted composition. (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
12. Regarding claims 7,8, 17, 18, Sagliano et al. discloses a method for growing and preserving nutrients in plant material particularly wheatgrass and the steps include harvesting the plant tissues followed by juice extracting by providing a low pressure hydraulic press which generates no greater than 90 degree F (i.e. about 32 degree C) heat and separating juice from fibrous materials and immediately freeze dried using a pharmaceutical freeze drier to maintain said juice at a temperature below freezing and reduce said juice into a powder followed by placing said powder into a storage container with sealing for later use (at least in Abstract, col 8 lines 42-50, and claims 1, 2, 7 etc. of Sagliano). Therefore, it meets “to generate dried treated grain” after step (b) of claim 1 and claim 11 as claimed in claims 7, 17 . It also meets the claim limitation of “after step (b), to generated milled treated grain flour product as claimed in claims 8, 18.
13. Claims 9, 10, 19, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sagliano et al. USPN 5820916 in view of Barbara et al. PL 176879 B1 as applied to claims 1, 11 and further in view of NPL Barberousse et al. (J Sci Food Agric. 88: 1494-1511, 2008).
14. Regarding claims 9, 19, Sagliano et al. is silent about the determination of hydroxycinnamate extractability concentration of ferulic acid following chemical extraction of said treated grain as claimed in claims 9, 19.
NPL Barberousse et al. discloses that chemical hydrolysis method is used to determine hydroxycinnamate extractability concentration by measuring ferulic acid ( page 1494, col 2 second paragraph , under “Extraction Procedures”) using various methods including spectroscopic method also ( page 1499, col 2 ).
One of ordinary skill in the art before the effective filling date of the claimed invention would have been motivated to modify Sagliano et al. with the teaching of NPL Barberousse et al. to determine hydroxycinnamate extractability concentration by measuring ferulic acid ( page 1494, col 2 second paragraph , under “Extraction Procedures”) using various methods including spectroscopic method also ( page 1499, col 2 ) in order to have an enhanced desired concentration of hydroxycinnamate in the extracted product.
15. Regarding claims 10, 20 claims “wherein said hydroxycinnamate extractability is determined according to aroma” . It is to be noted that and it is evidenced by applicant’s specification (in PGPUB [0019]) that the hydroxycinnamate extractability may be determined according to aroma (in PGPUB [0019]). Therefore, it would have been obvious that aroma is expected to increase with the higher amounts of hydroxycinnamate concentration in the concentrated product. The aroma is enhanced with the enhancement of the amount of hydroxycinnamate concentration in the final product. Therefore, it is within the skill of one of ordinary skill in the art to evaluate the “hydroxycinnamate extractability” by comparing the aroma intensity with the starting feedstock material. One of ordinary skill in the art can also determine different amounts of “hydroxycinnamate extractability” concentration containing extracted product using the method of NPL Barberousse et al. as discussed for claims 9, 19 and is applicable here also. Thereafter, one of ordinary skill in the art can determine and compare the aroma intensity profile to make a correlation between hydroxycinnamate and aroma based on the different enhanced values of “hydroxycinnamate extractability values and aroma profile containing samples and their aroma profile as guideline to evaluate the “hydroxycinnamate extractability” value of unknown sample based on aroma.
It is also optimizable.
Response to arguments
16. Applicants argued on second page second paragraph that “Sagliano et al. does not once consider, teach nor refer to the benefit, applicability or use of the methods for extraction of grain. In all instances, the use of "seed" or similar words in Sagliano are in reference to the seed as the starting point of the method related to growing the plant material that is then described as wheatgrass produced for use. Sagliano even explicitly states in claim 1 "harvesting said wheatgrass at first node stage just before leafing" which explicitly excludes grain from consideration under the teaching of Sagliano itself. Sagliano neither considers, teaches nor mentions the applicability of grain to the disclosed methods, and the term "grain" is never used in the entirety of the disclosure”.
In response,
(1) It is known that grains are type of seed (Google). It is also evidenced by Kanuch et al. (USPN 4208443) that the term "grain" used herein is meant the seeds or fruits of various food plants and the term is not limited to, but (can) includes, various cereal grasses” ( 1st paragraph under Background section). It is also to be noted that the disclosed “harvesting said wheatgrass at first node stage just before leafing (in claim 1 of Sagilano et al.) can be interpreted as it is the stage during or end stage of sprouting and which stage is known to contain portion of seed and early leaf formation. This can meet the phrase “comprising grain” of claim 1.
(2) It is also evidenced by applicants in the specification that in PGPUB [0074] that harvested intermediate wheatgrass comprises grain rich fraction and grass rich fraction ([0074]).
(3) It is evidenced by applicant’s specification that Thinopyrum intermedium is a seed as is evidenced by applicant’s specification (in PGPUB [0077] e.g. Thinopyrum intermedium is specific strain that increases seed size).
(4) It is also evidenced by applicants in the specification that in PGPUB [0075] that “The mass fraction of a harvested intermediate wheatgrass that may be used as intermediate wheat grain for processing” can be interpreted as , in this instance, the term is not limited to, but (can) includes harvested intermediate wheat grass is used (i.e considered) as similar ‘intermediate wheat grain as starting feedstock.
(5) in PGPUB [0079] The Thinopyrum intermedium it is also evidenced by applicants in the specification that in PGPUB, [0006] In 2008, The Land Institute bred a perennial wheat crop known as Kernza®, a form of intermediate wheatgrass (Thinopyrum intermedium). Kernza is a domesticated (not genetically modified) form of wheatgrass designed to be planted from a single seed and regrow on its own, year after year (https://landinstitute.org/media-coverage/kernza-the-perennial-grain-with-the-potential-to-change-agriculture-forever).
17. Applicants argued on second page last paragraph that “Accordingly, the Office Action's assertion that wheatgrass harvested at the first-node stage, just before leafing, is sufficiently similar to grain or seed material such that an extraction method applicable to one would necessarily apply to the other lacks evidentiary support. In view of Barberousse's expert report, and because Sagliano does not refer to the extracted material as "grain" or "seed," a prima facie case of obviousness cannot reasonably be established”.
In response, it is known that the first node stage before leafing is ‘seed-leaf’ stage. Therefore, Sagliano’s method is applicable and covers the extraction for both the seed and leaf. It is also to be noted, and as mentioned above that the claimed method is used to treat claimed “intermediate wheat” by providing a starting feedstock comprising grain from Thinopyrum (i.e. intermediate wheatgrass, in spec. in PGPUB at least [0006], [0074]) and Thinopyrum intermedium is a seed as is evidenced by applicant’s specification (in PGPUB [0077] e.g. Thinopyrum intermedium is specific strain that increases seed size).
Therefore, Sagliano’s method of harvesting wheatgrass at first node stage before leafing is applicable to claimed method to extract intermediate wheat by providing a starting feedstock comprising grain from Thinopyrum (i.e. intermediate wheatgrass, in spec. in PGPUB at least [0006], [0074]) as claimed in claim 1.
Additionally, according to MPEP 2143.01, “Obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so. In re Kahn, 441 F.3d 977, 986, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006) (discussing rationale underlying the motivation-suggestion-teaching test as a guard against using hindsight in an obviousness analysis)”.
It is also to be noted that the disclosed extraction method meets the claimed extraction method, therefore, it would have identical property of enhancing hydroxycinnamate extractability when the method is used to treat claimed “intermediate wheat” by providing a starting feedstock comprising grain from Thinopyrum (i.e. intermediate wheatgrass, in spec. in PGPUB at least [0006], [0074], [0077]) as claimed in claim 1.
Applicants do not have any further arguments. Therefore, the rejection is made as final.
Conclusion
18. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning the communication or earlier communications from the examiner should be directed to Bhaskar Mukhopadhyay whose telephone number is (571)-270-1139.
If attempts to reach the examiner by telephone are unsuccessful, examiner’s supervisor Erik Kashnikow, can be reached on 571-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BHASKAR MUKHOPADHYAY/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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